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How to Cancel a Trade Mark

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Lawdit Solicitors - Expert Author

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Written  on 12 April 2014

Collectively the reference for the cessation of trade mark rights is "cancellation". 

A trade mark can be cancelled in 4 ways 

1. Expiry. 2. Surrender. 3. Revocation. 4. Declaration of invalidity.

Let us take a look at invalidity. 

A trade mark may at any stage be invalidated if it fails to tick the boxes on absolute grounds as referred to in section 3 of the TMA and Article 7 of the CTM Regulation.

In short it should never have been registered in the first place, and it cannot argue that it has acquired distinctive character through use for the relevant goods or services (section 47(1), TMA and Article 52(1)(a), CTM Regulation).

3 Examples:

 Francis Geoffrey Bignell (trading as Just Employment (a firm)) v Just Employment Law Limited, [2007] EWHC 2203 (Ch), in which the High Court upheld a counterclaim and that JUST EMPLOYMENT lacked inherent distinctiveness and had failed to acquire distinctiveness.

 Lego Juris A/S v OHIM and MEGA Brands, Inc., Case C-48/09 P, in which the ECJ followed the Philips case so as to hold that a trade mark consisting of the shape of a Lego brick was invalid under Article 7(1)(e)(ii).

 Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others [2013] EWCA Civ 1465, in which the Court of Appeal held that the signs NOW and NOWTV.com were invalid in respect of telecommunication services because the word "now" would be understood by the average consumer as a description of a characteristic of the service, namely its instant nature.

Written by Michael Coyle


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2014-04-23 14:13:39 in Legal Articles

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